Thursday, 28 June 2012

Afro-IP has kept an eye on the highs and lows of collective rights management in Nigeria. Yesterday, this Leo was informed by COSON, an approved collecting society in Nigeria, that it has signed a multimillion naira royalty agreement with Multichoice (Nigeria) – the latter yet to announce or confirm the deal. The agreement grants
Multichoice the licence to broadcast musical works across its various
platforms. Here are some interesting comments by COSON’s
Chairman, Chief Tony Okoroji taken from the press release:

"You will recall that two years ago when
COSON was approved by the Nigerian Copyright Commission, we made a solemn
pledge to do whatever it takes to defend the rights of those who create or
invest in music in Nigeria.
[COSON asserting
its legitimacy as the nation’s approved collecting society]

We swore before you to end the many years of
the locust [Locust? When did this happen? asks chuckling Leo]We said that whatever it takes, we will
make collective management of copyright work in Nigeria… for two years COSON
has worked round the clock and been everywhere at the same time. I have been
asked whether COSON ever sleeps and I said no[Leo
urges COSON to get some rest so that it can be alert enough to face licence fee
dodgers]. COSON can't afford to
sleep until the abuse of the copyright in music and sound recordings are ended
in Nigeria.
Even then, COSON will not sleep" [Right, this is officially insomnia].

"I want to thank the Multichoice Staff and
Management, especially the Managing Director, Mr. John Ugbe. I can't recall how
many times John and Gozie Onumonu were at the COSON office in Ikeja, the
countless hours of negotiations and the many road blocks we worked together to
remove to make this possible. They have shown Multichoice to be a socially
responsible organization and I commend them for their never-say-die spirit"
[This is quite impressive!
Basically, respecting the intellectual property rights (IPRs) of others and
making sure that they make a reasonable living from their toil and sweat are all
within corporate social responsibility – I hope to refer some NGOs to this one].

"All public and commercial users of music do
not have to wait for a law suit before they contact COSON and obtain their
licence to use music in public" [We like this. Please keep up with the sensitisation
programmes in collaboration with stakeholders].

"I am informed that someone has misled owners
of hotels, restaurants and similar public establishments that the payment of
their DSTV subscription authorizes them to freely play music to their customers
and to the general public. There is no better place to state publicly that the
payment of subscription to receive the first class signals from DSTV is not the
same as a copyright licence to communicate music and sound recordings to the
general public. Hotels, restaurants and similar establishments which have not
done so should get in touch with COSON without delay” [Leo has a feeling
that this is probably not a case of wrong advice, rather, one a lack of
awareness on the part of most business owners that communicating such works to the
public without a licence is unlawful. Sounds familiar to collecting societies in other jurisdictions? Again,
sensitisation is imperative]

Also adding his voice was the Managing Director
of MultiChoice, Mr. John Ugbe, who said,"……I am very proud to state that as
MultiChoice, we value intellectual property and we have always been ensuring
that artistes get paid for their content, through our sister company we have
invested over 200M USD buying Nigerian content and with this new agreement with
music, we can only grow from here. [Good to hear African
companies publicly declaring their respect for IP and willing to pay money for it]

We believe that a labourer deserves his/her
wages and in our effort to renew vibrant talent emerging from Nigeria and the African continent,
there is a need for this kind of partnership. We encourage other organizations
to come onboard and work with structured organizations here" [Like COSON’s Chairman,
this reiterates the common view that creators of IP should benefit from their creation]

One can at least deduce from this
development that COSON is pulling out all the stops to ensure that copyright owners can trust
them to act in their best interests and consequentially, in the interest of millions
who enjoy the works of creative and talented people. This is surely another boost to the entertainment
industry and copyright in Nigeria.

Other related news:

Last year, a report
claimed that Multichoice sought relief from the Court against MCSN’s threat of
lawsuit; in the same year, COSON signed a partnership agreement with Google. Last but not least, if you thought you have heard the last
of the wrangling between MCSN and COSON, think again, see here

Monday, 25 June 2012

The latest development in the ongoing tug-o-war (see here and here) between the judiciary and the RSA government on whether IP transfers to non resident's require exchange control permission can be found in this month's Government Gazette (amendments to the Excon Regs by the President), extracted as:

"(4) For the purposes of sub-regulation (1 )(c)-

(a) 'capital' shall include, without derogating from the generality of that

(b) 'exported from the Republic' shall include, without derogating from the

generality of that term, the cession of, the creation of a hypothetic or

other form of security over, or the assignment or transfer of any

intellectual property right, to or in favour of a person who is not resident

in the Republic.".

Effectively, this means that IP transfers from locals to non residents require exchange control approval. But is the amendment lawful? At least one commentator (Webber Wentzel's Benjamin Cronin) thinks not - see here:

"The reason is that the empowering provision to make the Regulations themselves, which is contained in section 9(1)(a) of the Currency and Exchanges Act 9 of 1933, refers to the ability of the President to "make regulations in regard to any matter directly or indirectly relating to or affecting or having any bearing upon currency, banking or exchanges“. This empowering provision does not cover Intellectual Property, making any purported regulation dealing with Intellectual Property potentially unlawful. [ed - but is it - the IP seems incidental and the IP acts have not changed?]

Even if one were to accept the proposition that Intellectual Property could be the subject of Regulations under the Currency and Exchanges Act 9 of 1933, then the section 9 power to create this restriction may itself be unconstitutional. This is because the power to legislate is given by the Constitution exclusively to Parliament, which in turn may prescribe circumstances in which secondary or delegated legislation (such as Regulations) may be issued. The potential for the issuing of Regulations does not, however, mean that the President can usurp from Parliament the power to legislate [ed - what if that is what Parliament had already legislated in the empowering provision ie it had empowered the President?] ...

While on the face of it, this amendment is a positive step in that it attempts to create certainty by legislating a partial definition of the term "capital" and of the phrase "exported from the Republic", neither is in fact fully defined. Further, the new phrase "any intellectual property right" is itself not defined. Consequently, this amendment creates substantial uncertainty not only because of its doubtful legality, but also because of the lack of definitional detail." [ed - agreed. to take it to the absurd - if a well known local sports star is transferred to Europe, does he need excon approval - after all he/she possesses unregistered image rights, could be brand or have valuable know-how ... and what if a humble lawyer decided to do the same]

Afro Leo is more interested though in whether a protectionist regime so clearly advocated by RSAincentivise innovation & tech transfer in the country ie job creation and growth by creating a rule that IP generated in the country cannot be transferred outside the country without permission? Surely not but then again I am not an economist - comments welcome.

The 54th and final episode in Kingsley Egbuonu's A to Z tour of official African IP websites ends on a low note with a report on Zimbabwe --a country that plays host to the African Regional Intellectual Property Organization (ARIPO) but which, sadly, has so far failed to get its own act together. Kingsley explains:

Overview

Zimbabwe is a Contracting Party to a number of treaties on intellectual property including the Paris Convention for the Protection of Industrial Property and the Berne Convention for the Protection of Literary and Artistic Works. It is also a Member of ARIPO.

Copyright Office

• The Zimbabwe Intellectual Property Office (ZIPO) is the competent office responsible for copyright and related rights in Zimbabwe.

Afro-IP has reported various developments and/or updates of practical significance in recent times including here,hereand here.

Conclusion

Just about a week ago, Afro Leo was excited by what he discovered in Zambia; today, he is a bit disappointed to learn that Zimbabwe has no dedicated website for its intellectual property office.

This generic website which belongs to the Ministry of Justice and Legal Affairs perhaps promises so much that it is unable and/or yet to deliver on; for example, we found that the Department of Deed, Companies, Trade Marks and Patents and Industrial Designs’ mission statement is “To register, protect and facilitate easy access to information on proprietary rights in land, formal business organizations and Intellectual Property.....” while its vision is “To be the best service provider in the protection of proprietary rights in the region.”

While Afro-IP can understand that in some countries, inter alia, budgetary constraints might hamper the progress of intellectual property rights administration and/or sensitisation; it is quite difficult to muster excuses in this case considering that Zimbabwe hosts ARIPO, including various IP training programmes (here and here) for the region.

Who should assist with this issue: the government of Zimbabwe or ARIPO?
Kingsley tweets as @IPinAfrica. He currently has 292 followers.

Wednesday, 20 June 2012

By Singapore Notification No. 31: Singapore Treaty on the Law of Trademarks, the World Intellectual Property Organization (WIPO) announces the accession of the Republic of Benin to that important and increasingly popular Treaty.

There's going to be a delay, though. Since Benin is a Member State of the African Intellectual Property Organization (OAPI), the Treaty will enter into force in Benin three months after the date on which OAPI deposits its own instrument of accession, in accordance with Articles 26 and 28 of the Treaty.

Tuesday, 19 June 2012

An important case just published today on the use of
class headings in Europe can be located here – IPTranslator

The case was instigated by the Chartered Institute of
Patent Attorneys in the UK when their mark IP TRANSLATOR was rejected because
their class heading (41) spec was deemed to cover all services in the class which
included “translation services”.

Questions over the interpretation of the Nice Classification
were referred to the ECJ and observations were made by over 10 governments as
well as the EU Commission and OHIM. It is of significant importance in Europe because
OHIM’s practice to allow class headings was inconsistent with the practice of
some Member States.

The ruling by a Court of 12! (CIPC would love that type of attention right now)

1.Goods and services for which the protection of
the trade mark is sought to be identified by the applicant with sufficient
clarity and precision to enable the competent authorities and economic
operators, on that basis alone, to determine the extent of the protection
conferred by the trade mark.

2.Class
headings are allowed provided that such
identification is sufficiently clear and precise.

3.Where class headings are used they must specify whether it is intended to cover all the goods or services
included in the alphabetical list of that class or only some of those goods or
services. If the application concerns only some of those goods or services, the
applicant is required to specify which of the goods or services in that class
are intended to be covered.

The decision is unlikely to affect RSA specifications except
perhaps those where priority is claimed from marks filed in Europe because
partial priority is not allowed here, and expressions such as “all goods in the
class” (if contemplated by 3. above) may not be acceptable. For RSA filers into
Europe, if we apply our own test we should be fine. For the rest of Africa, the ECJ analysis provides a good explanation on interpretation of the Nice Classification and also how it works within the context of an EU wide directive(s).

In the ruling of the Court on June 5th 2012, the Registrar of Patents was restrained from granting to the Defendants, Emchai Limited, Tambco United Nigeria Limited and Anowat Project and Resources Limited any patent or design right to Transparent Ballot Boxes and Electronic Collapsible Transparent Ballot Boxes, which are respectively covered by a design right already issued to the Plaintiff, Beddings Holding on January 12, 1998 and November 27, 2006.

In the words of his Lordship:

“That by virtue of Sections 1, 2, 6 (1) and 13 of the Act, the plaintiff’s Certificate of Registration of Patent Rights RP16642 and Registration of Industrial Designs Rights Number RD13841 issued to the plaintiff on November 27, 2006 in and over the invention, named Electronic Collapsible Transparent Ballot Boxes by the first defendant, takes priority over subsequent registration of Industrial Designs, especially the registration of Industrial Designs Rights Number NG/RD/2010/708 to the fourth defendant , and subsequently registered by the first to the fourth defendants on October 14, 2010 in and over the same invention renamed Collapsible Transparent Ballot Box, and thereby precluded the defendants and other persons from infringing on the plaintiff’s exclusive right, as the fourth defendant’s invention is not new to the express provision of Section 13 (3) (a) of the Patent and Designs Act.

That by virtue of Section 1, 2, and 6 (2) of the Act, the Certificate of Registration of Patent Rights No: 16571 and Registration of Industrial Designs Rights Number RD13610 issued by the first defendant to the second defendant in and over the purported invention named Envopak Ballot Boxes on August 31, 2006 was done contrary to the provisions of Section 6 (2) of the Patent and Designs Act.

That by virtue of reliefs 1, 2, 3, 4 and 5 and Sections 1, 2, 3 and 6 (2) of the Patent and Designs Act, any action or actions taken or purportedly taken by the defendants relating to the said products without the prior and express license, consent and approval of the plaintiff is unconstitutional.”

Izuogu

This injunction also restrained the Independent National Electoral Commission (INEC) from using any invention covered by the said design right in conducting the upcoming gubernatorial election in Edo State.

It would be recalled that the plaintiff in this case has in the past successfully injuncted INEC and the other defendants, from awarding any contract for the manufacture, sales or distribution of any product/invention covered by these design rights, thereby stalling the conduct of the upcoming general elections in Nigeria. However this injunction was subsequently discharged on public interest considerations by his Lordship, Justice Ibrahim in the hearing of the substantive suit.

My general concern is that the Patent and Designs Act should be amended to require the patent registrar to conduct an examination as to patentability of the invention. This should reduce incidence of patents where the subject matter claimed already anticipates a prior art. For instance under § 13 (1) (a) of the Patent and Designs Act, for a design to meet the threshold of registrability, it must be “new” among other things. The section of the Act granting patent provides that “an invention is new if it does not form part of the state of the art,” this meaning is consistent with the plain meaning of “new” as used under § 13 (1) (a).

In interpreting “state of the art,” Nigerian courts should in my view not be restricted to only evidence of the state of the art available within Nigeria neither should it be limited to evidence of a prior Patent/Design grant obtained in Nigeria as the standard of been made available does not necessarily entail the prior grant of a Patent/Design right but rather that information concerning the claimed invention or design has been previously disclosed to the public by way of a written or oral description, by use or in any other way.

Though case laws in this area of law is still developing, I would very much like to see how Nigeria courts would decide when the issue of patentability comes before them.

Afro Leo wishes to thank Chukwuyere Izuogu for his synpopsis of the case an insightful comments. It is good to see that hard IP rights are enforceable in Nigeria, and also that local companies are using them.

Monday, 18 June 2012

Whether it be to hail the late Steve Jobs or proffer a remedy to global recession, the buzzword at the moment seems to be "innovation". From an investment perspective everyone seems to be talking BRIC and, recently, Africa. However, unless you read this blog and some others, the phrase "intellectual property" unfortunately does not always follow. Yet, undeniably IP is important which is why Afro Leo was excited when a colleague handed him a book entitled:

"Intellectual Property, Innovation and Management in Emerging Economies" edited by Ruth Taplin and Alojzy Z. Nowak published by Routledge.

The book seeks to argue that IP management development and innovation are fundamental to economic development, especially in newly emerging economies, which often hold vast reserves of natural resources and human knowledge that remain unprotected. It highlights countries that are realising this situation and provides case studies through a number of authors across a number of territories including Eastern Europe, Africa and especially Asia where there is a conscious link between creating innovation and IP to stimulate economic growth.

The book explains different types of innovation models, highlights success stories and explains some of the barriers to developing an innovation culture that understands IP and how to use it. The Africa chapter is written by Dario Tanziani and Nthabisheng Phaswana who illustrate, quite effectively, countries whose GDP and IP filing statistics reflect one another suggesting that IP infrastructure and GDP growth are linked although, because of a dearth of information, the authors admit that is not exactly clear whether IP development leads directly to economic growth.

There are several other excellent chapters that highlight how certain developing countries have embraced innovation and effectively created models that are driving growth. The emerging theme is that an "independent judiciary coupled with thoughtful and thoroughly understood implementation of IP laws within the context of cross border IP" is key.

Only one week away from the end of his cyber-trek atround Africa's official IP websites, the indefatiguable Kingsley Egbuonu (how sore his fingers must be by now!) has reached Zambia in his A-toZ sampling activities. Landlocked it may be, but Zambia is definitely all at sea when it comes to offering online IP information, as Kingsley explains:

"Overview

Zambia is a Contracting Party to a number of treaties on intellectual property including the Paris Convention for the Protection of Industrial Property and the Berne Convention for the Protection of Literary and Artistic Works. It is also a Member of the ARIPO.

Copyright Office

• The Copyright Administration (Ministry of Information and Broadcasting Services) is the competent office responsible for copyright and related rights in Zambia.

• This office currently has no website.

Industrial Property Office

• The Patents and Companies Registration Agency (PACRA) is the competent office responsible for the administration of intellectual property rights in Zambia.

• The Intellectual Property Unit (IPU) of the Zambian Police is responsible for intellectual property enforcement in Zambia.

Social Media Presence

None found.

Intellectual Property update in Zambia

Afro-IP has reported on various developments of practical significance in recent times including here, here and here.

Conclusion

Afro-IP found a very neat website for the industrial property office (PACRA) in Zambia. This website succinctly explains the different types of IP and how to obtain registration for each one of them in Zambia – including forms and fees. Other good features on the website include the business names search facility, the news/events page to keep users informed, and key opposition decisions which are on how to register a trade mark page.

Our discovery is very encouraging when compared with other ARIPO member states such as Swaziland, Liberia and Malawi -- but there is always that bit of room for improvement. Afro Leo would have fancied a search facility for registrable intellectual property rights and some social media presence which could help PACRA with intellectual property sensitisation".

"In a judgement that’s bound to get the talking heads
a-jabbering, Adv. Alasdair Sholto-Douglas SC has pulled off quite a feat by
convincing Davis J, sitting in the Western Cape High Court, that near identical
trade marks used in relation to wine and grapes are not confusingly similar.You can download the judgement here: Adv.
Sholto-Douglas’s fancy footwork is available here and that of
Adv. Morley SC (for the applicants) is available here.

Background

The First Applicant owns the registered mark ZONQUASDRIFT
in class 33 in respect of alcoholic beverages (except beer) and the Second
Applicant, a company owned by the First Applicant, owns a wine producing farm
called ZONQUASDRIFT and sells wine under that mark.The First Respondent runs a business from a
farm 1 kilometre away and is, as far as the applicants are concerned, a rather
naughty neighbour.According to the applicants,
the First Respondent’s use of the trading name ZONQUASDRIFT WINEYARDS CC in
relation to farming services and grapes amounts to trade mark infringement,
which name is also “undesirable” in terms of the Close Corporations Act.The First Respondent, in turn, counter
claimed for the expungement of the First Applicant’s mark on the basis that,
amongst others, it consisted exclusively of a geographic term.

Claims

Regarding trade mark infringement, the applicants relied
on section 34(1)(b) of the Trade Marks Act which extends infringement of a mark
to situations where the respondent employs the mark, or a similar mark, in
respect of similar goods or services, and not just identical goods or services,
provided deception or confusion in the marketplace is likely.The Court accepted the approach, laid down by
the same Court in New Media Publishing
(Pty) Ltd v Eating Out Web Services, that the appropriate test is to consider
whether the combined effect of the resemblance of the marks on the one hand and
the goods or services on the other results in a likelihood of deception or
confusion.The Court appeared to accept
that the marks were essentially identical and was effectively left with a
decision as to whether a mark registered in relation to alcoholic beverages
would be infringed by the same mark used in relation to grapes.

In deciding
against a likelihood of deception or confusion, the Court applied the
well-known factors established in the British Sugar case, being 1) the respective uses and users of
the goods or services; 2) the physical nature of the goods or services; 3) the
respective trade channels; 4) whether in practice the goods are likely to be
found in supermarkets; and 5) the extent to which the goods or services are competitive.

Some anomalies

Strangely,
regarding factor 3, the Court considered the trade channels the Second Applicant
had actually utilised instead of considering the general trade channels for the
type of goods as registered.Accordingly, the Court weighed this factor against a likelihood of deception
or confusion given that the First Respondent sold its grapes on the
local market to cooperatives, whereas the applicants exported their wine to
Germany.

Regarding
factors 4 and 5, the Court also appeared to weigh these against a likelihood of
deception or confusion given that the First Respondent does not produce wine
but sells grapes which do not appear in supermarkets and which do not compete
with wine.Adv. Morley however argued,
for the applicants, that there is no clear delineation between farms producing
and selling grapes or selling grapes and wine or selling wine exclusively, and
that this link between the source of grapes and wine supported an argument for
a likelihood of deception of confusion.The Court however didn’t really address this and proceeded to dismiss a
likelihood of confusion on the basis that the public would not be confused into
believing that ZONQUASDRIFT wine was produced using ZONQUASDRIFT VINEYARDS
grapes.

Regardless of
whether the public would assume that ZONQUASDRIFT wine was produced using
ZONQUASDRIFT VINEYARD grapes, the finding on this point is likely to be
controversial given that it appears to be a narrow interpretation of the
deception or confusion test.Even if the
public would not be believe that the wine was produced from the grapes, they
may well, upon encountering the grapes, believe that there is at least some
connection in trade between the producer of the grapes and the producer of the wine.For instance, the buyers at the wine
cooperatives that the First Respondent sells its grapes to may well consider
the grapes to originate from the producer of the wine.This is particularly so in light of the
initial interest confusion doctrine.

﻿﻿

Canoe Connotation

﻿﻿Interestingly,
the Court placed much significance on the geographic nature of the mark in
arriving at its decision.The Court
appeared to accept that Zonquasdrift is apparently an area surrounding a
crossing of the Berg River in the Riebeek Valley where grape farming does in
fact take place.This the Court found to
operate against a likelihood of deception or confusion in that the public would
associate the First Respondent’s ZONQUASDRIFT VINEYARDS mark with a geographical
place and not with the Second Applicant’s wine.Perhaps then this judgement is not as controversial as it is being made
out to be and that in another case, also involving wine and grapes where the
mark has no geographic meaning, a court may be willing to find a likelihood of
deception or confusion despite this judgement.

Even more
interesting is the fact that, despite apparently considering the mark to be
geographic, the Court refused to consider the counter application for
expungement of the registered mark.The
reasoning appears to be that because expungement was advanced as a defence to
the main application, which was shown to have failed, there was no need to
consider further defences.I suspect
that this may have been the result of the respondents arguing that should the
main application fail, then the counter application should not be pursued, with
a view to avoiding costs.

Concluding remarks

One thing’s for sure though - trade mark attorneys
everywhere will be thanking Adv. Sholto-Douglas – wine producers will now surely be advised to
make application in class 31 (covering grapes) in addition to class 33
(covering wine).Nothing puts a smile on
a trade mark attorney’s face faster than a quick additional application
fee.Good thing too – somebody’s got to
pay for Darren’s haircut!

Afro Leo's espresso

﻿﻿

No man[e] - Afro leo's trim

﻿﻿This case seems ripe for appeal because the infringement test has not been applied correctly but does it mean that the SCA would, applying the test as it should have been, find any differently?

I agree with the clean-living-crew-cut Jeremy who seems to infer that this case does not mean that wine and grapes are not similar goods. So it gets down to the strength of the mark ZONQUASDRIFT, which remains registered, and this tips the balance for me. Although the global appreciation test allows one to consider the strength of the registered mark (and therefore also its weakness) in assessing a likelihood of confusion, there is a point beyond which the Court logically cannot go unless the court invalidates the mark, which it was not prepared to do here. In other words, unless grapes and wine are regarded as dissimilar goods which the Court did not appear to say (in my view correctly), there must be a likelihood of confusion if an almost identical mark remains registered.

Thursday, 14 June 2012

For those who happen to find themselves in Geneva in two-weeks time, WIPO is presenting a 1.5 hour program on pharmaceutical licensing. Titled “WIPO Global Challenges Seminar on Licensing and Prices: New Approaches in the Pharmaceutical Sector,” the program aims to share new breakthroughs in “the field of IP licensing and pricing in the pharmaceutical sector.” Afro Leo hopes these breakthroughs in licensing and pricing increase access to much needed medicines like ARVs, and that looks likely.

The speaker list:

Dr. Chan Park, Executive Director ad interim of the World Health Organization’s UNITAID Medicines Patent Pool. Dr. Park presented an idea to WHO back in 2010 (pdf, p. 6) that outlined the Medicines Patent Pool’s goal of increasing the development of fixed dose medicine combinations through the creation of a large patent pool. Perhaps Dr. Park will share some updates on this project.

Mr. Shailesh Pednekar, General Manager, ARV Business and Global Therapy Management, Ranbaxy Laboratories Limited. Mr. Pednekar has been involved in research related to the costs of and access limitations to ARVs for some years, and Africa has been a big part of that work.

Mr. Gregg Alton, Executive Vice President, Corporate and Medical Affairs, Gilead Sciences. Mr. Alton hails form this Little Leo’s current stomping ground in the San Francisco Bay Area. Like the Medicines Patent Pool and Ranbaxy Laboratories, one of Gilead’s main focus areas is treating HIV/AIDS.

With these speakers on the bill, this program is sure to tackle many issues relevant for IP in Africa. If any readers are able to attend the program, please let us know how it goes!

In case you've missed it, Africa's first Creative Commons regional meeting in Africa is coming up at the end of this month in Entebbe, Uganda. According to the organisation's wiki page, the event looks like this:

It aims to bring together CC's community in African as well as partners from a wide range of organisations interested in open access, collaborative OER and digital learning projects in Africa. Attendees will include representatives of:

Africa’s open community, including Creative Commons, open education, and free and open source software;

the government and public sector, including regulators, teachers and librarians;

development organisations, NGOs and other non-profits, such as local digital media hubs;

International organisations, such as IGOs.

The purpose of the meeting will be to:

facilitate collaboration and interaction between these organisations;

encourage the further adoption of open standards, and in particular Creative Commons, across Africa; and

initiate at least one, if not more, collaborative, cross border project in the OER and digital media space.

The meeting will run for two days, with the first day focusing on telling the tale of open in Africa and planning around potential collaborative projects among participants, while the second day continues the collaborative planning process and serves as the Creative Commons Africa regional meeting.

Details

cost: free; travel and accommodation sponsorship may be available to selected guests (please see registration form)

Program

You can find a first draft of the program here. This is a general overview only - speakers on each topic will be announced closer to the meeting.

Registration

Registration for the meeting is free and open to the public. If you wish to attend, please fill in this registration form. Sponsorship may be available for representatives of key interest groups - you may indicate your interest on the registration form.

If you have any questions regarding the Convening, please contact Primah Kwagala at kwagalap at gmail.com.

Wednesday, 13 June 2012

In the last Afro-IP post, Kingsley wrote about Uganda’s coming ability to manufacture medicines in-country and its plans to maintain the current importation of generics from India and China. Kingsley also mentioned that Uganda is a member of a number of international IP treaties. Uganda is able to manufacture and import generic medicines without violating those international treaties because of the exceptions in TRIPs. Exceptions like these are allowed for all developing countries, but Uganda remains one of the very few taking advantage of them. Why?

This is part of the question explored in Carolyn Deere’s fabulous book The Implementation Game: The TRIPS Agreement and the Global Politics of Intellectual Property Reform in Developing Countries. Little Leo admits she’s a bit behind as this book was published a few years ago, but it is still an excellent read and highly relevant.

Deere explores not only the different manners in which countries implemented TRIPs in their own laws, but also the reasons behind these choices. In the book’s own words, “this book gives substance to the view that developing countries’ policies are often set by others.”

The book concludes that a number of different factors contributed to the economically-strange high level of IP protection put in many local laws when implementing TRIPs. From national politics, to international trade, Deere shows just how many pieces of our global interactions are intertwined in determining IP laws and norms.

One of the highlights of the book is an entire chapter dedicated to Francophone Africa. This is a region often overlooked in English IP writings and Deere does it justice. Unlike many other IP and developing country writings, The Implementation Game doesn’t focus solely on pharmaceuticals or access to medicines. The book covers all forms of IP in TRIPs, although the Francophone Africa chapter does only touch on copyright briefly.

Deere’s predictions in the last chapter are also very interesting to read because of the time that’s passed since the book was published. A few of her predictions are already proving true; others look likely but we’ll have to wait and see. The only slightly negative thing to be said about the book is that the editing isn’t great. There’s a number of typos throughout.

South Africa: Breaking news is that we now have a High Court decision that considers whether identical trade marks (or just about) can co-exist on wine and grapes. Not one of 50 odd 000 European decisions have considered the point and, just like the first heart transplant, it emanates from the Cape. Jeremy Speres is busy compiling the summary for you so this post is a heads up to purchase a bottle of your favourite vino and then imagine yourself as the winemaker whose neighbour just started selling grapes under the same name. Infringement or bypass - what's your cure? Watch this space.

Afro-IP has reported on various developments including those of practical significance in Uganda including here, here, here and here.

On other IP-related news, we learn that Ugandans now have a chance to manufacture essential medicines in their own country rather than have it imported from China or India. This is good news for technology transfer in Africa and should be an area to which all the energy of health-care NGOs should be directed. On the other hand, we also learn that the medicines advisor at the Health Promotion and Social Development (HEPS) has urged the Ugandan parliament to ensure the unfettered import of cheaper generics drugs until the capacity to manufacture in Uganda is achieved. This is equally right, provided there is no room for complacency and procrastination.

Finally, Afro-IP often discovers something to remind us of the legal history between the United Kingdom and some of the countries in Africa. This time we now learn that only UK design registrations are automatically extended to Uganda.

Conclusion

Uganda is another ARIPO member but, this time around, we found a live and functional website to comment on. As the name implies, the URSB’s website contains basic information relating to various registrable matters including business assets in Uganda. After the visit, Afro-IP took this recurring gloomy view – since the start of the A-Z tour - that the URSB’s website does not sufficiently cater for IP: for example, though it appears to educate on various IP rights, we only found forms TM1 and TM2 as the only forms for IP available online.

But don’t despair just yet; the URSB is very customer-oriented and it is currently conducting a poll on the quality of the services it has on offer. To participate, just visit the website and you will immediately find this on the right-hand side of the website.
We hope you can click on all things IP".

Friday, 8 June 2012

In L’Oreal v Interconsumer Products Limited
(unreported), the High Court of Kenya in a ruling delivered on 21st
February 2012, dismissed an appeal filed by L’oreal against the
decision of the Registrar of Trademarks rejecting L’Oreal’s opposition to the
registration of the mark NICE & LOVELY HERBAL OIL MOISTURIZER (opposed
mark).

On 28th
March 2006, Interconsumer applied to
register the opposed mark in class 3 of the Nice Classification. L’Oreal opposed the
application based on a variety of its earlier marks registered between 1992 and
2004, notably:

DARK AND LOVELY

DARK AND LOVELY
CHOLESTEROL PLUS

DARK AND LOVELY
RESTORE & SHINE OIL MOISTURIZER CRÈME

DARK AND LOVELY
DL PRECISE

DARK AND LOVELY
ULTRA CHOLESTEROL.

In addition to
the opposed mark Interconsumer had also registered the mark NICE n LOVELY in 2002,
which was not in dispute.

The Registrar on
27th September 2010 rejected the opposition. L’Oreal had argued before
the Registrar that the opposed mark was similar to the earlier marks, and that its
products were well known in Kenya and as a result, the opposed mark would be
deceptive and cause confusion in the market.

After hearing
the parties, the registrar concluded that the mark NICE & LOVELY was not
similar to DARK AND LOVELY and there could be no confusion under section 14 and
15 of the Trade Marks Act. The Registrar also concluded that L’Oreal had failed
to show that its trademark was well known in Kenya. The Registrar further found
that there had been honest concurrent use and both marks could co-exist in the
Register.

L’Oreal appealed
to the High Court primarily on the grounds that;

The register had misdirected herself by reducing the
opposition to a comparison of the marks NICE & LOVELY and DARK AND LOVELY.

The Court
agreed with the registrar’s finding. The Court also approved the registrar’s
reliance on the test for comparing word marks laid down by Parker J in the Pianoist case [1906] 23 RPC. The Court also
agreed with the Registrar that the opposing mark was not strong because each
of the words DARK and LOVELY had been disclaimed as a condition of registration
of the mark. On the appellant’s reliance on a decision by USPTO’s Trademark Trial and Appeal Board, which had sustained
opposition in a similar matter (opposition No. 91185552), the Court distinguished
the two cases in that the USPTO’s decision was largely informed by the fact
that there was no evidence of other similar marks in the USPTO’s register.

No evidence was tendered to show that Interconsumerhad used the mark NICE & LOVELY
HERBAL OIL MOISTURIZER to support the Registrar’s finding on honest concurrent
use.

The Court agreed
with the registrar’s finding that the respondent had used the mark NICE and
LOVELY since 1st March 1999 and the appellant had not tendered any evidence
to show that it had objected to the use of the mark in the last five years. As
a result, the Registrar could not be faulted for concluding that the appellant had
acquiesced in the respondent’s use of the mark.

The registrar did not consider L’Oreal’s evidence of
use in Kenya of the mark DARK AND LOVELY RESTORE & SHINE OIL MOISTURIZER CRÈME
and therefore the Registrar erred in not finding that the mark was well known
in Kenya.

The Court
disagreed with the registrar’s finding that the appellant had not proved that
the mark DARK & LOVELY is well known in Kenya. The Court observed that
between 2000 and 2006 the appellant marketed its goods in Kenya under the opposing
trademark and had spent 102,000 SA Rand in 2004 and 408,000 SA Rand in 2005 in
promoting the product in Kenya. Surprisingly the Court also concluded that both
marks were well known in Kenya and there has been honest concurrent use!

The registrar
erred in finding the phrases “& lovely” or “and lovely” to be descriptive
of goods in class 3.

The Court agreed
with the Registrar who had considered the fact that there were many marks in
the Register containing the two phrases and registered by different proprietors
who had also disclaimed the word LOVELY - since it was descriptive of goods in
class 3. The Court observed that, “when trade marks with a common element are
compared it also has to be established whether there are other trademarks on
the register and used by different owners that have the same common element”. If
so, “the consumer will have become accustomed to the use of this element by different
proprietor and will no longer pay special attention to it as a distinctive element
of the mark”.

The Court did
not consider this ground, but even if it had done so, perhaps it could not have
made any difference in the outcome considering the descriptive elements in both
marks.

Lessons
for trade mark owners

Trademark owners
should be aware of the risks of registering trademarks “held” by disclaimers or
readily agreeing to put disclaimers as a condition of acceptance of trademark applications
by the Registrar. A disclaimer could, in adulthood, turn out to be the “Achilles heel” of the trademark - just like the Greek warrior Achilles who as a baby his
mother tried to make him immortal by bathing him in a magical river but the
heel by which she held him remained his weakest point at the siege of Troy.

Likewise,
trademarks owners should be wary of trademarks with non-distinctive elements as
those elements are likely to be ignored during opposition or infringement proceedings.

Tuesday, 5 June 2012

In July 2010 Afro-IP reported on an important trade mark decision in Zambia under the post "Is Zambia first-to-file only?". The Zambian Registry dismissed the relevance of user rights notwithstanding that the laws of that country apparently recognise common law trade marks. Afro Leo commented on the curious ruling at the time.

Well, the ruling has now gone on appeal and the Supreme Court of Zambia has surprisingly agreed with the decision of Mrs Bando-Bobo of the Registry!

Afro Leo is pleased to know that he is not the only commentator who feels that the decisions are at odds with the Zambia legal system - Alan Smith and Nicole Howarth recently published an analysis of the judgement (DH Brothers Industries (Pty) Limited v Olivine Industries (Pty) Limited) in which they describe the situation as "worrisome and perplexing" and conclude that:

"The rationale behind that judgement is that, although Zambian law recognises a proprietor’s rights associated with an unregistered mark, the Zambian Trade Marks Act does not offer any protection in respect of those rights."

For trade mark owners, the position is clear - if you want protection in Zambia for your trade marks then register them! Afro Leo adds that one should use the national registration system to do so - although Zambia is a signatory to the Madrid System allowing Zambia to be designated using an International Registration, the local laws have not been domesticated to give effect to the Madrid arrangement meaning that there is some doubt as to whether IRs are protectable in that country. Indeed, recently he was advised by a local agent that they were not protectable.